European trademark reforms become a reality

On December 15 2015 the European Parliament approved the trademark reform package.

The subsequent publication of EU Regulation 2015/2424 amending the Community Trademark Regulation in the Official Journal means that the amending regulation will enter into force on March 23 2016 (although some of the provisions will require secondary legislation and will take effect 21 months after publication).

As of March 23 2016, the Office for Harmonisation in the Internal Market (OHIM) will be renamed the EU Intellectual Property Office (EUIPO), while the Community trademark will be renamed the EU trademark.

The amending regulation also revises the fees payable to the office and introduces a ‘one class per fee’ structure. The current regime allows for Community trademark protection in three classes for a €900 (electronic application) or €1,050 (paper application) fee. From March 23, the fee for registration in one class will be €850, with a second class costing an additional €50. Extending coverage to a third class (and for each subsequent class) will cost an additional €150. Therefore, applicants will pay a lower fee if they apply for only one class, the same fee if they apply for two and a higher fee if they apply for three or more. Meanwhile, renewal fees will be reduced in all instances and set at the same level as application fees.

A subsequent communication from OHIM has stated that the due date for the purpose of calculating a renewal fee is the date of expiry of the Community trademark to be renewed:

• Community trademarks expiring before March 23 2016 will be subject to the fees established in the current fee structure, even if renewal is requested and paid for after March 23 2016.

• Community trademarks expiring on or after March 23 2016 will be subject to the fee structure established in the amending regulation, even if renewal was requested and paid for before the entry into force of the communication (on February 1 2016).

A key area of harmonisation relates to goods and services, and adaptation of the classification system to comply with the IP TRANSLATOR decision and the Nice system. The amending regulation codifies the existing practice for trademarks filed after the judgment and extends it to trademarks filed before the judgment was issued, giving their owners a transitional six-month period to adjust the specification of their marks to their original intention when they filed them. The onus now falls on rights holders to identify “with sufficient clarity and precision” the goods and services for which protection is sought.

The treatment of goods in transit was hotly debated as the amending regulation progressed through the legislative process. The end result is that EU trademark owners will be able to prevent the entry of infringing goods and their placement in all customs situations (“including transit, transhipment, warehousing, free zones, temporary storage, inward processing or temporary admission”), even if the goods are not intended to be placed in the EU market. However, that entitlement lapses if, in subsequent proceedings, the declarant or holder of the goods can prove that the EU trademark holder is not entitled to prohibit the placing of the goods on the market in the country of final destination.

A number of changes will come into force 21 months after publication of the amending regulation (ie, on September 23 2017). One is the elimination of the graphical representation requirement in applications. Instead, signs will be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

September 2017 will also see the introduction of EU certification marks, which allow a certifying institution or organisation to permit adherents to the certification system to use the mark as a sign for goods or services complying with the certification requirements. The registration cost for an EU certification mark will be the same as that for an EU collective mark.

For more on the European reform package, see "Europe’s brave new trademark regime and how it will affect rights holders".